Complainants are Searle & Co. and G.D. Searle LLC of Caguas, Puerto Rico and New York, New York, United States of America, respectively, (hereinafter referred to jointly and singularly as “Complainant”).
Respondent is Office Graphic Design of Miami, Florida, United States of America. 2. The Domain Name and Registrar
The domain name at issue is registered with eNom, Inc. (“eNom”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2011. On March 21, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 21, 2011, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 20, 2011.
The Center appointed M. Scott Donahey as the sole panelist in this matter on April 20, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainants are subsidiaries of Pfizer, Inc., a large pharmaceutical company with operations in more than 150 countries. Complainant Searle & Co. holds the registered trademark CYTOTEC in the United States, which trademark registration issued April 16, 1985. Complaint, Annex 3. Complainant G.D. Searle LLC owns the registered trademark CYTOTEC in Colombia, which trademark registration issued February 11, 1986. Complaint, Annex 4. Complainant also has registered the mark CYTOTEC in 176 other countries around the world and in the European Union. Complaint, Annex 5. Since 1985, the CYTOTEC mark has been used in connection with the medicine misoprostol, a prescription medication indicated for the treatment of stomach ulcers and is contra-indicated for use by pregnant women, since it may cause miscarriage or other fetal complications. Complaint, Annex 6. The medicine is sold worldwide for use in connection with the treatment of stomach ulcers. Complainant’s sales of the medication worldwide over the last 25 years have generated hundreds of millions of dollars in revenues.
The domain name at issue was registered on June 11, 2008. Complaint, Annex 1. Respondent is using the domain name at issue to resolve to a web site in the Spanish language, which offers for sale the medicine misoprostol for use by pregnant women who are seeking to terminate their pregnancies. The web site prominently displays Complainant’s CYTOTEC mark, advertises the purchase of misoprostol for a countra-indicated condition, and gives an address and telephone number to reach contact persons in Colombia under the heading “Ordene Ahora!” which translated into English is the equivalent of “Order Now!” It is apparently a violation of Colombian criminal law for a woman to abort her fetus. 5. Parties’ Contentions A. Complainant
Complainant contends that the domain name at issue is confusingly similar to Complainant’s fanciful CYTOTEC mark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. (emphasis added) A. Identical or Confusingly Similar
The domain name at issue consists of the trademark CYTOTEC to which Respondent has appended the Spanish words “tu amiga” which roughly translated into English is the equivalent of “your close female friend.” A domain name is “confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.” Adobe Systems Incorporated v. Jeff Bluff, Online RX Sales LLC,WIPO Case No. D2006-1475. Accordingly, the Panel finds that the domain name at issue is confusingly similar to service marks in which Complainant has rights. B. Rights or Legitimate Interests
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name at issue is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue and Respondent has failed to assert any such rights. Accordingly, given the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Moreover, a number of UDRP panels have held that a registrant has no right or legitimate interest in using a domain name to sell the trademark owner’s prescription drug product without a prescription. See, e.g., F. Hoffmann-La Roche AG v. Aleksandr Kalinin,WIPO Case No. D2009-1214; Hoffman-La Roche Inc. v. Tamiflu Shop,WIPO Case No. D2006-0308; Roche Products Inc. v. Slava c/o Dynadot Privacy,WIPO Case No. D2010-1862. Here, the domain name at issue is used for a site that offers CYTOTEC (misoprostol) without a prescription. C. Registered and Used in Bad Faith
Respondent is using the domain name at issue to resolve to a web site on which Complainant’s CYTOTEC mark is prominently featured and which invites users to purchase CYTOTEC (misoprostol) without a prescription. Users could clearly be confused by such use and Respondent undoubtedly profits thereby. This is a violation of paragraph 4(b)(iv) of the Policy.
Moreover, Respondent is offering the prescription medicine to users without requiring a prescription, is offering it for a contra-indicated use that could endanger women and their fetuses and which promotes conduct that is apparently considered criminal in the jurisdiction in which its telephonic contacts are located. Under these facts and circumstances and pursuant to the holding of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 there can be little doubt of “plausible actual or contemplated active use of the domain name by […] Respondent that would not be illegitimate”. Accordingly, the Panel has no difficulty in finding that the domain name at issue has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name at issue be transferred to Complainant G.D. Searle LLC.
M. Scott Donahey
Sole Panelist
Dated: April 26, 2011
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